Case 2:14-cv-06659-AB-JEM Document 53 Filed 02/12/15 Page 1 of 8 Page ID #:393

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL

Case No.: CV 14-06659-AB (JEMx)

Title:

Date:

February 12, 2015

Jason Williams, et al. v. Roberto Cavalli S.p.A., et al.

Present: The Honorable

ANDR BIROTTE JR.

Carla Badirian
Deputy Clerk

N/A
Court Reporter

Attorneys Present for Plaintiffs:

Attorneys Present for Defendants:

None Appearing

None Appearing

Proceedings:

[In Chambers] Order DENYING Defendants Motion to

Dismiss (Dkt. No. 48.)

Plaintiffs Jason Williams, Victor Chapa, and Jeffrey Rubin (collectively,

Plaintiffs) filed a first amended complaint (FAC, Dkt. No. 43) against producers and
distributors of Just Cavalli clothing (collectively, Defendants), alleging copyright
infringement (first cause of action), removal and alteration of copyright information
(second cause of action), unfair competition (third, fourth, and fifth causes of action), and
negligence (sixth cause of action). On December 2, 2014, defendants Staff USA, Inc.,
Nordstrom, Inc., Amazon.com, Inc., and Zappos.com, Inc. (collectively, Moving
Defendants) moved to dismiss Plaintiffs second, third, fourth, and fifth causes of action.
I.

FACTUAL AND PROCEDURAL BACKGROUND

Plaintiffs allegations are as follows. Plaintiffs are well-known and respected

graffiti artists. (FAC 3.) In 2012, Plaintiffs created a mural in San Francisco. (FAC
28.) The mural contained signature elements that identified Plaintiffs as the creators of
the mural. (Id.) The mural depicted the stylized signatures of Revok and Steel,
pseudonyms commonly associated with plaintiffs Williams and Rubin, respectively. (Id.)
The signatures appear on a background of revolutions imagery, which is publicly
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recognized as plaintiff Chapas signature style. (Id.)

Defendants used high-resolution photography to obtain images of the mural and
placed the images on a collection of Just Cavalli clothing (the Collection). (FAC
31.) In designing the Collection, Defendants left Chapas revolutions imagery intact,
but rearranged the Revok and Steel signatures, rendering them indiscernible in the
resulting clothing. (FAC 30.) On some of the items in the Collection, the brand name
Just Cavalli was superimposed over images of Plaintiffs mural. (FAC 32.) Plaintiffs
contend that Defendants conduct was intentionally designed to induce, enable,
facilitate, or conceal the infringement. (FAC 49.) Items from the Collection have
been sold in various retail outlets around the world. (FAC 33.)
On June 5, 2014, Plaintiffs applied for federal copyright registration of the mural.
(FAC 41.) Upon learning of the Collection, Plaintiffs demanded that Defendants cease
using images of the mural and remove Collection items from the marketplace. (FAC
34.) Plaintiffs complain that Defendants have profited from their use of Plaintiffs mural.
(FAC 35.) Additionally, Plaintiffs complain that Defendants use of their artwork has
damaged Plaintiffs reputation and credibility. (FAC 36.)
Based on these allegations, Plaintiffs assert causes of action under federal
copyright law, 17 U.S.C. 1202, federal and state unfair competition law, and common
law.
II.

LEGAL STANDARD

Federal Rule of Civil Procedure (Rule) 8 requires a short and plain statement of
the claim showing that the pleader is entitled to relief. Fed. R. Civ. P. 8(a)(2). The
statement must provide enough detail to give the defendant fair notice of what the . . .
claim is and the grounds upon which it rests. Bell Atl. Corp. v. Twombly, 550 U.S. 544,
555 (2007). The Complaint must also be plausible on its face, allowing the Court to
draw the reasonable inference that the defendant is liable for the misconduct alleged.
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The plausibility standard is not akin to a
probability requirement, but it asks for more than a sheer possibility that a defendant
has acted unlawfully. Id. Labels, conclusions, and a formulaic recitation of the
elements of a cause of action will not do. Twombly, 550 U.S. at 555.
Under Rule 12, a defendant may move to dismiss a pleading for failure to state a
claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). When ruling on the
motion, a judge must accept as true all of the factual allegations contained in the
complaint. Erickson v. Pardus, 551 U.S. 89, 94 (2007). But a court is not bound to
accept as true a legal conclusion couched as a factual allegation. Iqbal, 556 U.S. at 678
(2009) (internal quotation marks omitted).
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III.

DISCUSSION
A.

Motion to Dismiss Second Cause of Action Removal and Alteration

of Copyright Management Information in Violation of 17 U.S.C.
1202

Plaintiffs Williams and Rubin allege that defendants Roberto Cavalli, S.p.A., Staff
USA, Inc., and Staff International, S.p.A. (Cavalli Defendants) violated 17 U.S.C.
1202 by removing and altering the Revok and Steel signatures from images of the
mural when the images were placed onto items in the Collection. (FAC 30, 49.) Of
the Cavalli Defendants, only Staff USA, Inc., is a party to this Motion to Dismiss.
17 U.S.C. 1202(b) prohibits the intentional removal or alteration of any copyright
management information (CMI) with knowledge that doing so will induce, enable,
facilitate, or conceal copyright infringement. Information constitutes CMI when it (1)
falls into one of the eight categories of information listed in 1202(c)(1-8) and (2) is
conveyed in connection with copies or phonorecords of a work or performances or
displays of a work, including in digital form 17 U.S.C. 1202(c).
One of the eight categories of information listed in 1202(c) is the name of, and
other identifying information about, the author of a work. 17 U.S.C. 1202(c)(2).
Plaintiffs allege that the mural contained the signatures of Revok and Steel,
pseudonyms that the public associates with Williams and Rubin, respectively. (FAC
28.) Taking Plaintiffs allegations as true, the signatures identified Williams and Rubin
as authors of the mural. Moving Defendants contend that the signatures do not constitute
CMI because Section 1202 does not protect signatures. (Defs. Mot. at 8.) Moving
Defendants cite no authority for their proposition that a signature cannot constitute CMI.
Indeed, a signature seems to be the exact type of information that would identify the
author of a work. As alleged, the Revok and Steel signatures widely identify
Williams and Rubin as authors of the mural, and the signatures fall within the scope
1202(c)(2). See, e.g., Tylor v. Rhythm of Life Cosmetics, Inc., No. 13-00280 DKW-KSC,
2014 WL 253012, at *3 (D. HawaiI Jan. 23, 2014) (photographers signature in at
bottom corner of photographs constituted CMI); see also Garnder v. CafePress, Inc., No.
3:14-cv-0792-GPC-JLB, 2014 WL 7183704, at *4 (discussing argument that the
defendant altered CMI in the form of Plaintiffs name or signature).
Plaintiffs properly allege that the signatures were conveyed in connection with the
display of their mural. The signatures appeared in the mural itself. (FAC 28.) If the
signatures were part of the mural, they necessarily were conveyed in connection with the
display of the mural. Since Plaintiffs allege that the signatures fall into 1202(c)(2) and
were conveyed in connection with the mural, Plaintiffs adequately claim that the
signatures constitute CMI.
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Moving Defendants contend that the signatures are not CMI, rendering 1202
inapplicable. (Defs. Mot., Dkt. No. 48 at 6.) They suggest that the Court should look
beyond the statutory text to the legislative purpose behind 1202. (Defs. Mot. at 7.)
They point out that the Digital Millennium Copyright Act (DMCA), of which 1202
was a part, was targeted at digital copyright issues. (Defs. Mot. at 6.) Thus, they argue,
some technological process must have been used in placing or removing the signatures
for 1202 to apply. (Defs. Mot. at 7.) In support of their position, Moving Defendants
cite two cases, I.Q. Grp. V. Weisner, 409 F. Supp. 2d 587, 597 (D.N.J. 2006) (reviewing
legislative history and finding 1202 applicable only when the removed information
function[s] as a component of an automated copyright protection or management
system) and Textile Secrets Intl v. Ya-Ya Brands, Inc., 524 F. Supp. 2d 1184, 12011202 (C.D. Cal 2007) (analyzing 1202s legislative history and finding it inapplicable
unless some technological process was used either in placing or in removing copyright
information). (Defs. Mot. at 6-7.) Since Plaintiffs do not allege that a technological
process was used in the creation or removal of the signatures, Moving Defendants claim
that 1202 does not apply. (Defs. Mot. at 6.)
Moving Defendants reliance on IQ Group and Textile Secrets does not withstand
further inquiry. IQ Groups holding has since been rejected by the Third Circuit in
Murphy v. Millennium Radio Grp. LLC, 650 F.3d 295, 305 (3d Cir. 2011) (finding that a
gutter credit next to the plaintiffs photograph constituted CMI even though it was not
part of an automated copyright protection or management system). While Textile Secrets
has not been contemplated by the Ninth Circuit, a more recent Central District of
California opinion came to the opposite conclusion. Fox v. Hildebrand, 2009 WL
1977996, at *2-3 (C.D. Cal. 2009) (finding that a handwritten copyright notice on
architectural renderings constituted CMI even though it was not in digital form). Many
other recent decisions reject the proposition that CMI is limited to information created or
removed through a technological process. See, e.g., Leveyfilm, Inc. v. Fox Sports
Interactive Media, LLC, 999 F. Supp. 2d 1098, 1101 (N.D. Ill. 2014) (finding no
requirement that CMI be digital or connected to internet commerce); Agence France
Presse v. Morel, 769 F. Supp. 2d 295, 306 (S.D.N.Y. 2011) (explicitly declining to
follow IQ Group in light of the plain meaning of 1202); Interplan Architect, Inc. v. C.L.
Thomas, Inc., 2009 WL 6443117, at *5 (S.D. Tex. 2009) (finding no textual support for
the proposition that 1202 is limited technological processes).
Moreover, the Court finds the Murphy and Fox decisions persuasive as a matter of
statutory interpretation. When a statutory text is clear, a court should not resort to
legislative history. Ratzlaf v. U.S., 510 U.S. 135, 147-148 (1994). The plain meaning of
1202 indicates that CMI can include non-digital copyright information. Nowhere in
1202 does the text limit the definition of CMI to digital information. In fact, 1202(c)
defines CMI as information listed in 1202(c)(1-8), including in digital form. If
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information needed to be in digital form for 1202 to apply, the language including in
digital form would be entirely superfluous. Courts avoid reading statutes in a manner
that will render statutory language superfluous. Astoria Fed. Sav. and Loan Assn v.
Solimino, 501 U.S. 104, 112 (1991).
Moving Defendants argue that, even if the signatures constitute CMI, Plaintiffs
allegations are inadequate because Plaintiffs fail to identify which two Plaintiffs [sic]
names were removed. (Defs. Mot. at 8.) A cursory glance at the FAC reveals that
Plaintiffs identified Williams and Rubin as the artists whose names were removed.
Plaintiffs allege that the signatures of Revok and Steel are chopped and rearranged to
such an extent that they are not recognizable in Collection items. (FAC 30.)
Elsewhere in the FAC, Plaintiffs identify Williams and Rubin as artists who produce
works under the pseudonyms Revok and Steel, respectively. (FAC 13, 15.) The
FAC adequately identifies Williams and Rubin as the artists whose signatures were
removed.
Lastly, Moving Defendants claim that Plaintiffs fail to allege the signatures were
altered or removed. (Defs. Mot. at 9.) Moving Defendants argue that, since Plaintiffs
allege the Cavalli Defendants copied literal images of the mural, they cannot also claim
that they altered the mural. (Id.) Moving Defendants mischaracterize Plaintiffs
allegations. Plaintiffs allege that, [w]hile Reyes revolutions are fully recognizable in
the pieces of the Collection, the signatures of Revok and Steel are chopped and
rearranged to such an extent that they are not recognizable. (FAC 30.) In other words,
Plaintiffs allege the Cavalli Defendants copied the mural, but omitted portions of the
mural that identified Williams and Rubin as authors, and adequately allege the Cavalli
Defendants removed or altered the Revok and Steel signatures.
For the foregoing reasons, Plaintiffs satisfactorily allege that the Revok and
Steel signatures constitute CMI and that the Cavalli Defendants intentionally removed
the signatures to aid their infringement. Thus, the Court DENIES Moving Defendants
Motion to Dismiss Plaintiffs second cause of action.
B.

Motion to Dismiss Third Cause of Action Unfair Competition Under

43(a) of the Lanham Act

Plaintiff Chapa alleges that Defendants violated 43(a) of the Lanham Act by
using Chapas signature revolutions imagery in Collection items. (FAC 69.) Section
43(a) prohibits producers of consumer goods from using a false designation of origin
that is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by another
person. 15 U.S.C. 1125(a). Chapa alleges that his revolutions imagery functions as
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a product packaging or logo. (FAC 57.) Thus, Chapa contends, Defendants use of
his revolutions imagery is a false designation of origin likely to cause consumer
confusion. (FAC 62.)
Moving Defendants claim that the Supreme Courts decision in Dastar Corp. v.
Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), precludes Chapas Lanham Act
claim. (Defs. Mot. at 9-11.) In Dastar, the defendant copied and edited the plaintiffs
video series and sold it under its own name. Id. at 26-27. According to the plaintiff, this
constituted reverse passing off because the defendant sold anothers work under its
own name. Id. at 27. Reverse passing off occurs when [a] producer misrepresents
someone elses goods or services as his own. Id. at n.1. Passing off, on the other hand,
occurs when a producer misrepresents his own goods or services as someone elses. Id.
Even though the plaintiff alleged reverse passing off, the Court held that the plaintiff
could not recover on its Lanham Act claim. Id. at 38. The Court reasoned that when
43(a) of the Lanham Act refers to a false designation of origin, it means a false
designation of the producer or manufacturer of the tangible goods, not the source of the
communication embodied in the work. Id. at 37. Since the plaintiff was the physical
producer of the videotapes and labeled the tapes as such, the plaintiffs conduct caused no
confusion about the origin of the videotapes. Id. at 38. The Court explained that the
Lanham Act is not designed to reward innovation, but rather to reduce consumer costs by
preventing competitors from copying a source-identifying mark. Id. at 34. Thus, after
Dastar, a plaintiff cannot succeed in bringing a Lanham Act claim for reverse passing off
solely by alleging that a defendant appropriated the plaintiffs communicative content
without accreditation.
Moving Defendants contend that Chapas Lanham Act claim is precluded because
it alleges the kind of reverse passing off at issue in Dastar. (Defs. Mot. at 11.)
However, the facts alleged in Chapas Lanham Act claim establish passing off, not
reverse passing off. Chapa alleges that Defendants use of his revolutions imagery
created the false and deceptive impression that the Just Cavalli garments and accessories
are associated with and/or manufactured by [Chapa] and Plaintiffs. (FAC 62.) Thus,
Chapa claims that Defendants sold their own products using his source-identifying
imagery. This conduct constitutes passing off, which occurs when a producer sells its
own goods while misrepresenting that they were made by another. Since Chapa alleges
passing off, rather than reverse passing off, Dastar does not preclude Chapas Lanham
Act claim.
Moving Defendants also argue that Chapas Lanham Act cannot succeed because
Plaintiffs copyright claim and Chapas Lanham Act claim seek to protect the same
design. (Defs. Reply, Dkt. No. 50 at 6.) Moving Defendants point to no authority that
supports their proposition that a design may not be protected by both the Lanham Act and
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copyright law. In fact, caselaw supports to the opposite conclusion. For example, in
Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110, 1114 (W.D. Wash.
2007), creators of a popular book brought both a copyright infringement claim and a
Lanham Act claim alleging, among other things, that the defendant used an image from
the front cover of their book as its corporate logo. The plaintiffs claimed that the cover
was an original design protected by copyright law. Id. at 1118. They also claimed that
the design on the cover functioned as a trade dress that identified them as the creators of
the book. Id. The court agreed. Id. While the copyright claim and the Lanham Act
claim referred to the same facts, the two claims addressed distinct wrongs. Id. The
copyright claim protected the plaintiffs creative work, and the Lanham Act claim
protected the plaintiffs rights in their source-identifying trade dress. Id. The Court is
persuaded by Bachs finding that a defendant can simultaneously violate the Lanham Act
and copyright law. See also, Nintendo of America, Inc. v. Dragon Pacific Intl, 40 F.3d
1007, 1011 (9th Cir. 1994) (finding that the defendant violated both copyright law and
the Lanham Act when he copied the plaintiffs videogames and misrepresented that his
copies were produced by the plaintiff); Craigslist Inc. v. 3Taps Inc., 942 F. Supp. 2d 962,
979 (N.D. Cal. 2013) (finding both a Lanham Act claim and a copyright claim proper
when the defendant reproduced the plaintiffs copyrighted ads, within which the
plaintiffs trademark appeared).
As noted by Moving Defendants, Plaintiffs claim that the mural is an original work
protected by copyright law. (FAC 40.) However, Chapa also claims that the
revolutions imagery within the mural identified him as a creator of the mural. (FAC
28, 58.) When Defendants placed images of the mural onto items in the Collection, they
not only appropriated Plaintiffs copyrighted mural, but also used Chapas sourceidentifying imagery. Thus, like in Bach, Defendants one act of copying simultaneously
infringed on Plaintiffs copyright and Chapas source-identifying product design.
Because Chapa adequately alleges that Defendants violated 43(a) of the Lanham
Act by producing and selling Collection items containing Chapas source-identifying
imagery, the Court DENIES Moving Defendants Motion to Dismiss Plaintiffs third
cause of action.
C. Motion to Dismiss Plaintiffs Fourth and Fifth Causes of
Action Unfair Competition Under Cal. Bus. & Prof. Code
17200 et seq. and California Common Law
Based on the allegations set forth in Chapas Lanham Act claim, Plaintiffs claim
that Defendants engaged in unfair competition in violation of Cal.Bus. & Prof.Code
17200 et seq. and California common law.
Moving Defendants once again argue that Plaintiffs allege reverse passing off, thus
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leaving the Federal Copyright Act as their sole avenue for recovery. (Defs. Mot. at 13.)
As explained above, however, Defendants alleged use of Chapas signature imagery
constitutes passing off, not reverse passing off.
Unfair competition under Cal.Bus. & Prof.Code 17200 et seq. is broadly
defined to include anything that can properly be called a business practice and that at the
same time is forbidden by law. Summit Tech., Inc. v. High-Line Med. Instruments, Co.,
933 F. Supp. 918, 943 (C.D. Cal. 1996) (quoting People v. McKale, 25 Cal.3d 626, 632
(1979)). A claim of unfair competition under Cal.Bus. & Prof.Code 17200 et seq. is
substantially congruent to a trademark infringement claim under the Lanham Act.
Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944
F.2d 1146 (9th Cir. 1991) (quoting International Order of Jobs Daughters v. Lindberg &
Co., 633 F.2d 912, 916 (9th Cir. 1980)). Since Chapa adequately pleads his Lanham Act
claim, his California statutory claim survives as well.
Similarly, California common law prohibits passing off. See, eg. Weinstock, Lubin
& Co. v. Marks, 109 Cal. 529, 538-539 (1895) (finding unfair competition under
California common law when the defendant opened a clothing store with a similar name
to the plaintiffs popular clothing store); Summit Tech. 933 F. Supp. at 943 ([T]he Court
sees no difference between statutory unfair competition and common law unfair
competition.). Because Chapa alleges passing off in violation of the Lanham Act and
Cal.Bus. & Prof.Code 17200 et seq., his California common law claim is also proper.
For the foregoing reasons, Plaintiffs adequately plead their California statutory and
common law claims, at least with respect to Defendants alleged use of Chapas sourceidentifying imagery. Thus, the Court DENIES Moving Defendants Motion to Dismiss
Plaintiffs fourth and fifth causes of action.
IV.

CONCLUSION
The Court DENIES Moving Defendants Motion to Dismiss. (Dkt. No. 48.)
IT IS SO ORDERED.

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